The Intellectual Property Office of New Zealand (IPONZ) has updated its practice following regulatory changes to now allow for partial replacement of national trade mark registrations with International Registrations (IR) designating New Zealand.
Traditionally, replacement was only available where an IR completely covered the goods and services of an earlier national registration. The recent regulatory amendments now allow partial replacements, meaning only some of the goods or services in the national registration may be replaced by the IR.
What this change means for trade mark owners
If you hold both:
- a national New Zealand registration
- an IR that designates New Zealand (NZD)
You may request that IPONZ “take note” of a replacement, either fully or partially.
Once a valid request is made:
- IPONZ will annotate both the national registration and the NZD designation to show the replacement
- WIPO will be notified that the replacement has been recorded.
This process can assist with portfolio streamlining and may reduce renewal and management costs over time, particularly for owners transitioning their portfolios into the Madrid System. By consolidating national rights into a single international trade mark registration, renewals can eventually be managed through one procedure (that of the international trade mark) while still benefiting from the earlier filing date of the national mark. The replacement feature under the Madrid Protocol allows you to let your national registration lapse while still retaining its earlier registration date.
Eligibility for full or partial replacement
Full replacement is available where the national registration:
- covers all goods/services in the IR
- is for the same mark and owner
- was registered at the time the IR designated New Zealand.
Partial replacement is available where the national registration:
- covers some (but not all) of the goods/services in the IR
- is for the same mark and owner
- was registered at the time the IR designated New Zealand.
How to request a full or partial replacement
To start the process, you will need:
- IR number
- National registration number
- Owner details
- Whether the request is for a full or partial replacement
- For a partial replacement, the specific goods and services being replaced.
Our team of experts can guide you in navigating this process.
Should you review your trade mark portfolio?
These changes offer greater flexibility in managing overlapping national and international portfolios. Owners with overlapping national and Madrid registrations may wish to review their portfolios to determine whether a replacement, full or partial, would be beneficial. This may provide a more streamlined record at both IPONZ and WIPO.
If you would like assistance assessing eligibility or preparing a replacement request, our team is happy to help.
